2009-1140 In re Michael Sones, opinion by Linn with a dissent by Newman.

Michael Sones filed an intent-to-use application for the mark ONE NATION UNDER GOD for charity bracelets. The website where he sold the bracelets initially had no picture of a bracelet, but instead described the product as “ONE NATION UNDER GOD CHARITY BRACELET” and listing underneath “ONE NATION UNDER GOD CHARITY BRACELET, CHOICE OF BLUE OR RED $2.00 EACH.” Sones submitted a screenshot of this webpage as a specimen to prove use of the applied-for-mark.

The PTO rejected the specimen because it did “not show a picture of the goods in close proximity to the mark.” Sones appealed the decision to the Federal Circuit, which struck down the PTO’s rigid requirement of a picture.

The court held that there is no bright-line rule that an online trademark specimen must include a picture and that any such requirement by the PTO is in error. It found no basis for discriminating against the virtual world when there was no similar rule in the real world. “For brick-and-mortar stores, there is no rule that specimens of use must show pictures. … [T]angible specimens – whether labels, containers, or displays – can show use in commerce by describing the goods in sufficient detail in relation the marks.”

The court stated that the test for a proper specimen of use is “that it must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.” While a picture may be a heavy hand weighing in favor of the acceptability of a specimen, it is not necessary; the context as a whole must be considered.

The court indicated that the context includes whether the webpage has a “point of sale nature” – i.e., whether a visitor could buy or order the product directly from the page. Also important is the depth of description of the product and whether the inherent qualities of the product can be recognized from that description.

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